Free Speech and Registration of Disparaging, Immoral or Scandalous Marks

On December 15, 2017 a three-judge panel of the Court of Appeals for the Federal Circuit (“CAFC”) held that Section 2(a) of the Lanham Act, which prohibits registration of a trademark that is immoral or scandalous, violates the First Amendment and is, therefore, unconstitutional. In re Brunetti, Appeal No. 2015-1109 (Fed. Cir. December 15, 2017). The CAFC therefore reversed the Trademark Trial and Appeal Board (“TTAB”) which had affirmed the Trademark Office’s decision to refuse to register the trademark FUCT for clothing.

The decision is not surprising as it is consistent with the Supreme Court’s ruling in June 2017 in Matal v. Tam which held Section 2(a)’s bar on registration of disparaging marks to be an unconstitutional restriction on speech.

The CAFC found FUCT to be scandalous, but rejected the government’s arguments in support of the constitutionality of Section 2(a)’s bar on registration of immoral or scandalous trademarks. Specifically, the CAFC found that a trademark registration is not a “government subsidy program” or a “limited public forum” and that the bar on registration did not survive either strict or intermediate scrutiny under the First Amendment.

The direct effect of the Supreme Court’s decision in Tam and the CAFC’s decision in Brunetti on trademark registrations is clear — the Trademark Office should now allow trademarks deemed to be disparaging, immoral or scandalous to register and refuse to cancel registrations for trademarks alleged to be disparaging, immoral or scandalous.

The indirect effect of the decisions is unclear, but the Supreme Court’s opinion has already had a “free speech” implication beyond the issue of trademark registration. On January 3, 2018 the Second Circuit in Wandering Dago Inc. v. Desitto, et. al., No. (2nd Circuit January 3, 2018) held that New York’s Office of General Services violated state and federal rights of the owners of a food truck by denying them a license to participate in a government run outdoor lunch program in Albany’s Empire State Plaza on the basis that the name of the truck, “Wandering Dago,” as well as the names of sandwiches offered from the truck (e.g. the Goombah and Polack) were ethnic slurs. Applying the Supreme Court’s decision in Tam the Second Circuit held that the Office of General Services’ refusal to allow Wandering Dago to participate in the lunch program amounted to viewpoint discrimination. As noted by the court:

“Ultimately, we think [Tam] compels the conclusion that [the Office of General Service] [has] unconstitutionally discriminated against [Wandering Dago’s] viewpoint by denying its Lunch Program applications because [Wandering Dago] branded itself and its products with ethnic slurs. Although ethnic slurs are used to express a variety of opinions and obtain a variety of effects, under [Tam] the mere use of these potentially offensive words in the factual setting presented here reflects a viewpoint and cannot be framed by the government as a larger viewpoint-neutral category of speech content available to advance multiple viewpoints and therefore subject to less First Amendment protection.”

The Second Circuit also rejected the Office of General Service’s argument that the license to participate in the lunch program was a type of speech which was immune to First Amendment scrutiny. Specifically, the Court held that the Office of General Service’s denial of a license to Wandering Dago to participate in the lunch program was not a form of government speech. Just because the government provides a forum for speech does not transform that speech into the government’s own speech.